It was another interesting year for intellectual property law

Toronto intellectual property lawyer John Simpson, principal of IP and new media law boutique Shift Law Professional Corporation, shared his views on some of the more interesting copyright and trademark cases of 2021.

In January, Simpson explained that a Federal Court of Canada decision favouring one of his clients illustrated the importance of moving quickly when seeking an interlocutory injunction in a copyright case. Court dismisses TRREB’s motion for an interlocutory injunction

A trademark infringement lawsuit filed against Mill Street Brewery by The Tragically Hip may raise the question of whether appropriating something of iconic cultural significance can be justified though any such argument was unlikely to succeed, he told LegalMattersCanada.ca in March. Tragically Hip lawsuit against brewer is a ‘run-of-the-mill’ case

Mashup culture highlighted in Nike legal battle

In April he noted Nike’s court victory to stop the sale of “Satan Shoes” was the latest high-profile legal battle relating to mashup culture. “We live in a world where there is constant recycling of existing content, especially in the music business. That typically applies to copyright cases, to such an extent that Canada’s Copyright Act has been amended to specifically address circumstances in which it is permissible to take existing works and reuse them. But the legal issues arising from mashup culture are not limited to copyright law. We are now seeing it in trademark cases and we’re likely to see more of it. This case potentially has broad implications and big brands will be watching closely.” Devil is in the details in Nike’s ‘Satan Shoe’ trademark battle

New measures designed to expedite trademark applications were welcomed but may not go far enough to ease a growing backlog in the Canadian Trademarks Office, Simpson explained in May. Trademarks Office unveils measures to ease ’embarrassing’ backlog

In June, he commented on a Federal Court decision that dealt with two books based on the infamous “Black Donnellys,” whose ongoing 1880s feud with neighbours in Lucan, Ont., led to bloodshed and murder. At issue was whether historical facts can be protected under copyright law. Copyright case examines the issue of history repeating itself

An attempt by famed street artist Banksy to remain in the shadows while protecting his iconic work from unauthorized reproduction is “an interesting study in the differences between copyright and trademark law,” Simpson remarked in July. “The purpose of copyright law is to create incentives for creators to create, and to enable creators to commercially benefit from their creations,” he explained. “Trademark law is, in one part, about consumer protection, helping consumers identify the source of the goods that they are buying. And at the same time, it is there to ensure a company’s products are not confused in the marketplace.” The intellectual property protection Banksy wants comes at a cost

SCC hands York University a victory

The Supreme Court of Canada handed York University a big win in holding that it is not bound to pay royalties to Access Copyright under a collective licensing regime. However, in its unanimous decision, the Court declined to even consider York’s request for a declaration that all copying of materials done in accordance with its copying guidelines constitutes fair dealing, Simpson noted in his August post. SCC refuses to say whether copyright guidelines are fair dealing 

The Willy Wonka attack ad against Justin Trudeau on Twitter during the past federal election was a good example of how intellectual property rights enforcement procedures on social media platforms can give rights owners much quicker results than courts, he noted in September. Willy Wonka ad shows effectiveness of social media IP policing policies

In November, Simpson said Adidas’ Dutch Supreme Court loss after a 25-year trademark infringement fight with international clothing company H&M illustrates how owning a famous logo can present problems. He remarked there are “two interesting points to note in this case. The first is the fine line between decorative designs and designs that are used to function as trademarks. The second is how in some cases, having a really famous logo can be a double-edged sword when it comes to enforcing the rights to it.” Adidas loses battle of the stripes in trademark infringement lawsuit

He closed the year discussing non-fungible tokens, observing that as digital products become more popular, consumer brand owners are increasingly looking to secure trademark rights. “Many particularly well-known brands such as Nike and Estée Lauder are trying to extend the scope of their real-world trademarks to the virtual world. Nike has registrations that cover existing product lines and retail services, but as it starts selling virtual goods, it will want its valuable trademarks to cover those goods as well. Many lesser-known brands are also looking to get in on the action.”  Non-fungible tokens the next trademark challenge on the horizon